Edward Lowe Foundation

Trademark Trial and Appeal Board

Nov 12, 2004

No. 78145553 (T.T.A.B. Nov. 12, 2004)

Mailed: 11/10/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Edward Lowe Foundation
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Serial No. 78145553
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Sana Hakim and Kathryn Starshak of Bell, Boyd & Lloyd for
applicant.
John Dwyer, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Quinn, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Edward Lowe Foundation to
register the mark PEERNET for “providing computerized
online databases featuring online peer group directories in
the field of entrepreneurs, business surveys used to
understand the needs and issues of entrepreneurial peer
groups, directories of those wishing to ask entrepreneurial
and business related questions of each other; and articles
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78145553
2
and information in the field of and relating to
entrepreneurial and business development issues.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark, if used in connection with
applicant’s services, would be merely descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Applicant contends that its mark, when considered as a
whole, is not “PEER NETWORK,” but rather is a fanciful mark
inasmuch as PEERNET does not exist in the English language.
Applicant argues that its mark does not immediately convey
any characteristic of applicant’s services, but rather
requires imagination to determine attributes of the
services; “it requires the same amount of imagination to
link the PEERNET mark to Applicant’s services as it would
to believe that the mark refers to a net that could be put
up in a backyard to prevent neighbors from ‘peering’ into
the yard.” (Brief, p. 8). Further, applicant asserts that
any doubt about descriptiveness must be resolved in
1 Application Serial No. 78145553, filed July 19, 2002, based on
an allegation of a bona fide intention to use the mark in
commerce.
Ser No. 78145553
3
applicant’s favor. According to applicant, its mark
suggests “to consumers that Applicant’s services could be
used as a ‘safety net’ for entrepreneurs....Applicant has
created a unitary mark that uses the multiple definitions
of ‘peer’ and ‘net’ to suggest that entrepreneurs or other
organizations can use Applicant’s PEERNET services to
‘capture’ or ‘snare’ ideas of information from other
entrepreneurs or organizations.” (Brief, pp. 6 and 11).
In support of its position, applicant relied upon
dictionary definitions of the terms “peer” and “net.”
The examining attorney, relying on dictionary
definitions of the terms “peer” and “net,” maintains that
the mark sought to be registered is the equivalent of “PEER
NETWORK,” and that the mark is merely descriptive of
applicant’s services which are used as an entrepreneur peer
network. In addition to the dictionary definitions, the
examining attorney submitted, in support of the refusal,
excerpts of web pages pulled from the Internet, copies of
third-party registrations of marks which include “NET” for
on-line services, and excerpts of articles retrieved from
the NEXIS database.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
Ser No. 78145553
4
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003); In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987), and In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term
need not immediately convey an idea of each and every
specific feature of the applicant’s goods or services in
order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973). Whether a term is merely
descriptive is determined not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with those goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Contrary to the gist of some of
applicant’s remarks, it is settled that “[t]he question is
not whether someone presented with only the mark could
Ser No. 78145553
5
guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002);
see also In re Home Builders Association of Greenville, 18
USPQ2d 1313 (TTAB 1990); and In re American Greetings
Corporation, 226 USPQ 365 (TTAB 1985).
The term “peer” is defined as “a person who has equal
standing with another or others, as in rank, class, or
age.” The American Heritage Dictionary of the English
Language (4th ed. 2000). The term “net” is an acceptable
and commonly understood abbreviation for “network.”
AcronymFinder (2003). The term “network” means “an
extended group of people with similar interests or concerns
who interact and remain in informal contact for mutual
assistance or support.” The American Heritage Dictionary
of the English Language (4th ed. 2000). As shown by the
examining attorney’s evidence, the term “NET” has been
deemed merely descriptive in a number of third-party
registrations which include disclaimers of the term “net,”
or which were registered under the provision of Section
2(f) or on the Supplemental Register. See General Mills
Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277 (TTAB
1972) [“Although the registrations are not evidence of use,
Ser No. 78145553
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the registrations show the sense in which the term ‘fiber’
is employed in the marketplace, similar to a dictionary
definition.”).
The record also includes the following representative
evidence retrieved from the Internet and the NEXIS
database:
Networking--Entrepreneurs are often
engaged in a lonely struggle filled
with risks and uncertainty, especially
early in the growth of the firm. They
can benefit considerably from
associations with others who can share
their successes and frustrations.
There are several types of such
networks. Peer networks are methods of
providing entrepreneurs with access to
others. The most common types are
trade associations which are usually
membership organizations of firms
engaged in the same or similar
industries. The interaction of these
participants may be hindered if they
perceive themselves to be competitors.
Another type of peer network is based
on the stage of the firm. Even very
young firms can help others who are
engaged in the same process of growing
their business. Networks can provide a
resource to companies that can help to
sustain themselves under adverse
circumstances and the networks can be
retained as the firms grow. The second
type of network relies on the
availability of experts.
(www.vistaventures.net)
As a relatively new executive position,
CIOs just don’t have the well-
established peer networks that serve
their business counterparts so well.
We’d like to change that. This week
Ser No. 78145553
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we’re introducing Computerworld
Executive Suite, a private online
community where IT leaders can meet and
talk....
(Computerworld, May 14, 2001)
The organization was formed to address
issues relevant to the post community
in the form of a peer network, industry
panels, and the continuation of an
annual technology retreat.
(The Hollywood Reporter, July 24, 2002)
The Young Entrepreneurs’ Organization
is a peer network that helps thriving
business owners reach the next tier of
success by offering networking
opportunities....
(The Business Press/California, January
27, 2003)
Suggestions from Jim Rohrbach of
Entrepreneur.com on how to start your
own mastermind group include: I start
with self-assessment. Why do you want
to create a peer network?
(The Journal Record (Oklahoma, OK), May
20, 2002)
....others are fostering community
relationships with fellow IT
executives, building a strong peer
network....
(Infoworld, December 9, 2002)
....the Young Presidents Organization,
a global peer network for presidents
and chief executive officers of
companies of a certain size.
(Ventura County (CA) Star, September 7,
2000)
Interested company leaders may also
join the strategic leadership forums
held after the events that allow a peer
network discussion that goes deeper
Ser No. 78145553
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into the various issues.
(Milwaukee Journal Sentinel, February
21, 2000)
There’s a peer network in the eastern
part of the state, where farmers can
see other farms that have expanded and
talk to someone who’s done it to
relieve their apprehension.
(Milwaukee Journal Sentinel, June 21,
1998)
....she urges tapping into peer
networks and poring over industry
salary data....
(The Courier-Journal (Louisville, KY),
November 27, 2000).
Applicant states that its “services are meant to allow
entrepreneurs to exchange information with other
entrepreneurs through an online information exchange.”
(Brief, p. 6). An excerpt from applicant’s web page
indicates that it is providing “A Collaborative Learning
Network,” and that applicant’s “Member Directory” allows
the user to “Connect with the correct people.” The excerpt
shows the following:
Our PeerNet member directory is a
secure service provided uniquely to the
members of the CEO Resource Alliance,
allowing us to:
-contact members from across the
country
-focus searches using specific
information (state, industry, etc.)
-participate in the Experience Exchange
We must consider the mark as a whole in determining
whether the mark is merely descriptive because, even if the
Ser No. 78145553
9
individual terms are descriptive, the mark as a whole may
not be. However, in the present case, we cannot agree with
applicant that the combined term is suggestive. Rather, we
agree with the examining attorney’s assessment that the
applied-for mark PEERNET would be readily perceived as PEER
NETWORK; substituting the abbreviation NET for the full
word NETWORK, and removal of the space between the two
terms PEER and NET does not change the commercial
impression of the mark in any meaningful way. Based on the
evidence of record, we find that PEERNET is merely
descriptive of the salient function or feature of
applicant’s services, namely, to allow peers (that is,
individuals with similar interests and concerns) to network
through an on-line exchange of ideas and information.
Applicant’s services are, in effect, providing an on-line
peer network.
We are entirely unpersuaded, for the same reasons
indicated by the examining attorney, by applicant’s
arguments based on competitors’ need to use the term, the
anti-dissection rule, and that imagination is required to
discern any characteristic of applicant’s services. We
also reject applicant’s apparent “double entendre” argument
relating to the “snare” or “trap” meaning of “net,” or to
the meaning of “safety net.” These alleged connotations
Ser No. 78145553
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simply are too oblique and strained, and, therefore, are
highly unlikely to be reached by purchasers, especially
given the obvious “peer network” connotation.2 Further,
although applicant is correct in stating that doubts about
mere descriptiveness are resolved in an applicant’s favor,
we have no doubts in the present case given the evidence of
record. See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB
1994) [“The fact that applicant will, or intends to be, the
first and/or only entity to use the term ‘MICRO-RETRACTOR’
for surgical clamps is not dispositive where, as here, such
term unequivocally projects a merely descriptive
connotation.”].
Decision: The refusal to register is affirmed.
2 Cf. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370
(Fed. Cir. 2004) [“tennis.net” for a store selling tennis nets
would be a “witty double entendre” relating to tennis nets].